Recent Limitations On Patent Term Adjustment For 'A' Delay

The U.S. Patent and Trademark Office compensates patent applicants for delay in processing applications by issuing patent term adjustment that can lengthen the life of a patent based on finding of the existence of so-called “A” and “B” types of delay. The scope of permissible “A" delay by the USPTO was set forth in the Patent Term Guarantee Act of 1999 to “compensate patent applicants for certain reductions in patent term that are not the fault of the applicant.”[1] Recently, however, in Pfizer Inc. v. Lee,[2] the Court of Appeals for the Federal Circuit nullified any A delay consequent to correction of patent office error if that correction was prompted by the applicant. In effect, the applicant is put “at fault” for errors made by the patent office. This holding, along with two recent decisions by the U.S. District Court for the District of Columbia, seriously limits the statutory “[g]uarantee of prompt patent and trademark office responses.”[3]

Background

The Uruguay Round Agreements Act,[4] enacted on June 8, 1995, established a term for United States patents of 20 years from the earliest priority claim.[5] Delays at the U.S. Patent and Trademark Office due to interference or derivation proceedings, secrecy orders or appellate review ultimately decided in favor of the applicant, resulted in patent term extension that extended patent term beyond the 20-year expiration date to the extent any such delays did not overlap.

The U.S. Patent and Trademark Office compensates patent applicants for delay in processing applications by issuing patent term adjustment that can lengthen the life of a patent based on finding of the existence of so-called “A” and “B” types of delay. The scope of permissible “A" delay by the USPTO was set forth in the Patent Term Guarantee Act of 1999 to “compensate patent applicants for certain reductions in patent term that are not the fault of the applicant.”[1] Recently, however, in Pfizer Inc. v. Lee,[2] the Court of Appeals for the Federal Circuit nullified any A delay consequent to correction of patent office error if that correction was prompted by the applicant. In effect, the applicant is put “at fault” for errors made by the patent office. This holding, along with two recent decisions by the U.S. District Court for the District of Columbia, seriously limits the statutory “[g]uarantee of prompt patent and trademark office responses.”[3]

Background

The Uruguay Round Agreements Act,[4] enacted on June 8, 1995, established a term for United States patents of 20 years from the earliest priority claim.[5] Delays at the U.S. Patent and Trademark Office due to interference or derivation proceedings, secrecy orders or appellate review ultimately decided in favor of the applicant, resulted in patent term extension that extended patent term beyond the 20-year expiration date to the extent any such delays did not overlap.